IP: Opportunities to interact with (and educate) the USPTO

Ask any patent attorney to list the most important tools used to advance applications during examination, and they likely will include the examiner interview. The interview may be in the form of a teleconference or in-person meeting, and may last from 15 minutes to an hour. The interview provides an interactive opportunity for both sides to assess the strengths and weaknesses of their positions as to a particular application.

Interaction with the U.S. Patent and Trademark Office (USPTO) is not limited to the highly individualized context of the interview, however. The USPTO has established other avenues for patent applicants and their attorneys to communicate with examiners and their managers. These avenues may be useful in addressing systemic issues that are less efficiently handled on a case-by-case basis. In this article, we will discuss two such programs: the customer partnership meeting and the Patent Examiner Technical Training Program (PETTP).

Customer partnership meeting

The customer partnership meeting provides an opportunity for a dialogue between the USPTO and the remainder of the patent community (often referred to as “stakeholders” by the USPTO). Topics may include common legal or procedural issues faced during examination, but typically do not include technological matters. These meetings are not designed to create a consensus. They can provide the stakeholders with valuable insight into the decision-making occurring within the USPTO, especially in regard to developing trends.

Some customer partnerships have a long history. Others have been formed only recently. One of the oldest customer partnerships is the Biotechnology/Chemical/Pharmaceutical Customer Partnership. This group has been meeting for well over a decade on a quarterly basis. Topics addressed at the most recent meeting included “An Introduction to Examiners’ Training and Attorney’s Perspectives,” as well as the various changes to USPTO practice required to implement the America Invents Act. Older programs and presentations are archived on the USPTO website.

One of the newer customer partnerships is the Medical Device Customer Partnership. Although it was formed recently, the group has generated substantial interest. At the November 2011 meeting, approximately 125 examiners, managers and other USPTO personnel joined approximately 100 external stakeholders, attending in-person or by webcast, for a morning of discussion and debate.

As a panelist at the November meeting, I was impressed by the openness of the communication between the USPTO and the stakeholders. Opinions were offered on a broad range of topics, including the proper procedure for examiner interviews, the relevance of patents and publications cited as a consequence of applicant’s duty of disclosure and appropriate claim scope. There certainly were differences of opinion between the stakeholders and the USPTO, and even between various groups within the USPTO. As such, the meeting provided a perspective unobtainable through other means, certainly in such a compact presentation format.

PETTP

While the customer partnership meetings address primarily procedural and legal issues, the PETTP helps examiners become more familiar with the technologies that they are examining. In short, the PETTP permits outside experts to come to the USPTO (or appear by webcast), and present on the technologies with which they are intimately familiar. The hope is that these additional educational opportunities will improve the quality of the examination process, particularly in areas where the patent literature may be sparse.

This program is not intended to create a database of vetted experts that the USPTO will use or rely on during examination. Instead, it solicits stakeholder presentations, which the examining corps will use to improve the strength and quality of U.S. patents through specialized training. As such, this program appears to be taking a different direction than the Network of Experts program being explored at the Food and Drug Administration, which takes the vetted expert approach.

As USPTO Director David Kappos explained during the November Medical Devices Customer Partnership meeting, the ultimate goal is for the USPTO to capture the information presented at these PETTP presentations for examiner use. In particular, Director Kappos mentioned that he would like to have all of the presentations recorded, and the transcripts made available. While some of the presentations certainly have been recorded, it is my understanding that no plan has yet been implemented to prepare transcripts.

To increase the awareness of the program, the USPTO recently partnered with the Association of University Technology Managers (AUTM). As a March 15 press release announced, the partnership will be known as the Patent Examiners Training Initiative (PETI). However, in discussing PETI further with the responsible parties within the USPTO, it is clear that this program is part of the PETTP administered by the USPTO, rather than a new program.

More information on the PETTP is available at the USPTO website, or by e-mailing Examiner_Technical_Training@uspto.gov. Some of the organizations already participating include Apple, Facebook, IBM, Intel and St. Jude Medical. At the present time, the USPTO has expressed a particular desire to obtain additional presentations from organizations involved in the design and manufacture of medical devices.

This article is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. Views expressed are those of the author and not necessarily the opinions of Marshall, Gerstein & Borun LLP or any of its clients. Readers should not act upon the information presented without consulting professional legal counsel.